809    Translation and Transliteration of Non-English Wording in Mark

An application to register a mark that includes non-English wording must include an English translation of that wording.  37 C.F.R. §2.32(a)(9).  This requirement also applies to compound word marks comprised of two or more distinct words (or words and syllables) that are represented as one word, in which one or more of the words in the mark appears to be non-English wording that would clearly be perceived as a distinct word(s) within the compound. For example, if the mark is GRINÇANTCOMPUTERS, the commercial impression is that the mark is comprised of the words GRINÇANT and COMPUTERS. In such a case, the application must include a translation of the French word GRINÇANT, which means "creaking" in English. If, however, the combination either suggests a single word or conveys a commercial impression other than a mark comprised of two separate words, no translation of the non-English portion should be required. Thus, if the mark is FELIZCITY, the commercial impression is that the mark is a play on the word "felicity" and no translation of the term "feliz" (which means "happy" in English) is required. See TMEP §809.01 regarding the procedure for examining applications for marks with non-English wording that do not include an accurate translation.

Similarly, an application for a mark that comprises non-Latin characters must include a transliteration of those characters, and either an English translation or a statement that this portion of the mark has no meaning in English.  37 C.F.R. §2.32(a)(10).  A transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters.  Examples of statements translating and transliterating a word in non-Latin characters are as follows:

The non-Latin characters in the mark transliterate to Asahi and this means "Rising Sun" in English.

or

The non-Latin characters in the mark transliterate to Weidamei and this has no meaning in a foreign language.

If an application for a mark comprising non-English wording or non-Latin characters does not include an accurate translation and/or transliteration, the examining attorney must require the applicant to submit a statement of translation/transliteration.  37 C.F.R. §2.32(a)(9)–(10).

When an application or certificate of registration includes a translation, both the non-English wording and the English translation will appear in the records of the USPTO.  See TMEP §809.03 regarding the printing of the translation/transliteration statement in the Official Gazette and on the registration certificate.

In a TEAS Plus application, if the mark includes non-English wording, the initial application must include an English translation of that wording.  37 C.F.R. §2.22(a)(16).  If the mark includes non-Latin characters, the application must include a transliteration of those characters.  37 C.F.R. §2.22(a)(17).  If the applicant does not meet these requirements, the applicant must pay a processing fee per class to have the application examined as a regular TEAS application.  See TMEP §819.01(m) for further information on translation and transliteration statements in TEAS Plus applications.

See TMEP §809.01(b) regarding the limited exceptions to the requirement to provide a translation of foreign wording in the mark.

809.01    Examining Applications for Marks Comprising Non-English Wording that Do Not Include an Accurate Translation or Transliteration

In order to properly examine applications with non-English wording, the translation and transliteration of the non-English wording must be determined prior to performing a search of the mark.  This is critical because the foreign equivalent of an English term may be regarded in the same way as the English term for purposes of determining descriptiveness, requiring disclaimer, and citing marks under §2(d) of the Act ( see, e.g., TMEP §§1207.01(b)(vi), 1209.03(g)).

Therefore, if there is no translation and/or transliteration in the initial application, the examining attorney should ascertain the meaning of non-English wording before searching the mark.

The examining attorney may obtain the meaning of non-English wording through sources such as foreign language dictionaries and search engines.  The examining attorney may also consult the Trademark Librarian or the Translations Branch, as appropriate.

If research by the examining attorney, the Trademark Library, and/or the Translations Branch indicates that the term has no meaning or no clear and exact equivalent in a foreign language, although no inquiry regarding the meaning in a foreign language is necessary, the examining attorney has the discretion under 37 C.F.R. §2.61(b)  to make such an inquiry. If no inquiry is made, the examining attorney must enter a Note to the File in the record indicating that the term was checked for a translation.  In such cases, a statement regarding meaning must not be entered for printing in the Official Gazette. See TMEP §809.01(a) regarding when an inquiry is made.

If the examining attorney determines the meaning of the non-English term(s), he or she must search the terms as they appear in the application, the transliterated terms, and the English translation(s) for the terms, as applicable.  The examining attorney must also require (under 37 C.F.R. §2.61(b) ) that an accurate translation be made of record by the applicant using the researched translation or other accurate translation provided by applicant.  If the applicant disputes a translation obtained through online resources, the examining attorney should supplement the record with evidence from the Trademark Librarian and/or the Translations Branch.

If the translation is provided or supplemented after the examining attorney has conducted a search for conflicting marks, the examining attorney must conduct a new search of the transliterated terms and/or the English translation(s) for the terms, as applicable.

809.01(a)    Inquiry/Applicant’s Response Regarding Meaning in a Foreign Language

If it is necessary to make a separate inquiry regarding the meaning of non-English wording, the examining attorney should provide the applicant with the correct format for a translation or transliteration statement.   See TMEP §809.03.  If a general inquiry is made regarding meaning under 37 C.F.R. §2.61(b)  (i.e., whether the term has significance in the relevant trade, any geographical significance, or any meaning in a foreign language), the applicant’s response may not be in the correct format for the translation or transliteration statement.  When an applicant’s response to an inquiry regarding the meaning of non-English wording includes statements that are not related to the translation or transliteration of such wording, the examining attorney must ensure that only statements regarding the translation or transliteration are entered in the relevant Trademark database using the appropriate format for printing on any registration certificate that may issue. See TMEP §809.03.

Similarly, if the applicant responds to an inquiry regarding non-English wording that "the mark has only trademark significance," or in some similar manner, the examining attorney must not enter the statement in that form in the Trademark database. Instead, the examining attorney must ensure that the statement is reformatted appropriately, to reflect that the wording has no meaning, in the relevant Trademark database for printing. See TMEP §809.03. It is not necessary to issue an examiner’s amendment in such cases.

809.01(b)    Limited Exceptions to Rules for Translations

There are three limited exceptions to the general rule requiring that all foreign wording be translated.   See TMEP §§809.01(b)(i)–809.01(b)(iii).

809.01(b)(i)    Foreign Terms Appearing in English Dictionary

It is generally unnecessary to provide a translation of a foreign term if the term appears in an English dictionary (e.g., croissant, fiesta or flambé).  However, if a term that appears in the English dictionary appears in a mark as part of a foreign idiomatic phrase or other unitary expression, a translation of the idiomatic phrase or unitary expression is required.  It would be illogical to break the phrase into its individual word elements and to translate only the individual words that do not appear in the English dictionary.  Such a translation would serve no useful purpose because it would not convey the true commercial impression of the phrase.

Example:  If the mark included the phrase "la fiesta grande," an appropriate translation would be "the great celebration" or possibly "the great fiesta."  It would be inappropriate to translate only "la" and "grande."  The ultimate goal is to provide a translation that reflects the true meaning of the non-English wording in the mark and the commercial impression made by the entire phrase.  See TMEP §809.02 regarding equivalency in translation.

809.01(b)(ii)    Foreign Articles or Prepositions Combined with English Terms

It is generally unnecessary to provide a translation of foreign articles or prepositions, such as "de," "le," "la," or "il," when combined with English terms, because their meaning is generally understood and, in this context, they are being used to convey an impression different from their foreign meaning.  For example, in the mark "LE CASE," it is unnecessary to translate "LE."

809.01(b)(iii)    Words from Dead or Obscure Languages

It is generally not necessary to translate words from dead or obscure languages.   Cf. Gen. Cigar Co. v. G.D.M. Inc., 988 F. Supp. 647, 660-61, 45 USPQ2d 1481, 1491-92 (S.D.N.Y. 1997) (finding applicant had no obligation to disclose that the term COHIBA for cigars means "tobacco" in the language of the Taino Indians in the Dominican Republic, because cigar smokers in the United States would not be aware of such a meaning).  See TMEP §§1207.01(b)(vi) and 1209.03(g) regarding the applicability of the doctrine of foreign equivalents to words from dead or obscure languages.  The determination of whether a language is "dead" must be made on a case by case basis, based upon the meaning that the term would have to the relevant purchasing public.

Example:  Latin is generally considered a dead language.  However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in news articles), then a Latin term is not considered dead.  The same analysis should be applied to other uncommon languages.

809.02    Equivalency in Translation

The translation that should be relied upon in examination is the English meaning that has significance in the United States as the equivalent of the meaning in the non-English language.  The following are examples of equivalency in translation:

  • (1) "Chat Noir" - The exact equivalent in English is "black cat," and this translation would undoubtedly be recognized by the purchasing public in this country.   Ex parte Odol-Werke Wien Gesellschaft M.B.H., 111 USPQ 286 (Comm’r Pats. 1956) (affirming the refusal to register the mark "Chat Noir" because the words "Black Cat" were already registered for related goods).
  • (2) "Mais Oui" - The English equivalent of the phrase "mais oui" is "why, certainly," or "why, of course," and not the literal translation "but yes."   In re Societe Des Parfums Schiaparelli, S.A., 122 USPQ 349 (TTAB 1959).  A satisfactory translation must be some normal English expression that will be the equivalent in meaning of the term "mais oui" in French.
  • (3) "Schwarzkopf" - The term can be literally translated as "black head," but, even to German-speaking persons, the primary significance of "Schwarzkopf" is most likely that of a surname.  When the primary significance of a non-English term is as a surname, the term should not be translated. See TMEP §1211 regarding surnames.

If any question arises as to the proper translation of a mark, the examining attorney may consult the Trademark Library or Translations Branch of the USPTO.  The determination of the appropriate translation often requires consideration of the meaning in relation to the goods and/or services.  See TMEP §1207.01(b)(vi) regarding the use of the doctrine of foreign equivalents in determining likelihood of confusion under 15 U.S.C. §1052(d), TMEP §1209.03(g) regarding the doctrine of foreign equivalents in determining questions of descriptiveness under 15 U.S.C. §1052(e)(1), and TMEP §1211.01(a)(vii) regarding the doctrine of foreign equivalents in determining whether a term is primarily merely a surname under 15 U.S.C.  §1052(e)(4).

809.03    Printing of Translations and Transliterations

Generally, non-English wording in a mark must be translated into English and the translation (and transliteration, if applicable) must be printed in the Official Gazette and on the registration certificate.  See TMEP §§809.01–809.01(a) regarding when a statement that a term has no meaning in a foreign language should be printed.

Sometimes, translations that are not precise, or that give a variety of meanings, are placed in the record.  While all possible translations, and discussions relative to meaning, are useful for informational purposes, not all such matter is appropriate for printing in the Official Gazette or on the certificate of registration.  Only a translation that is the clear and exact equivalent ( see TMEP §809.02) should be printed.  This normally means only one translation, because the existence of a variety of alternative translations, or the necessity of including explanatory context, usually indicates lack of a clearly recognized equivalent meaning.

If an applicant submits a translation that is too verbose or vague to be appropriate for printing, the examining attorney must require a clear, concise translation.  The transliteration of non-Latin characters, if any, must be included in the statement to be printed.  If necessary, the examining attorney should rewrite the statement via an examiner’s amendment and ensure that the Trademark database is updated accordingly.

Example:  The translation statement contains the proper translation, but the statement is not suitable for printing because it is too wordy.  If the examining attorney is only "reformatting" the applicant’s statement without changing the substance, the examining attorney should rewrite the translation statement into a simple, clear statement as to meaning, issue a "no-call" examiner’s amendment ( see TMEP §707.02), and ensure that the Trademark database is updated accordingly.

Example:  The translation statement is vague or is otherwise in need of clarification in order for the statement to be clear and concise.  The examining attorney should contact the applicant and suggest a simple, clear statement.  If the applicant agrees to amend the translation statement as suggested, the examining attorney should issue a regular examiner’s amendment, and ensure that the Trademark database is updated accordingly.  If the applicant and examining attorney cannot agree on wording, the examining attorney must issue an Office action to resolve the issue.

One of the following statement formats should be used, as appropriate:

The English translation of the word "__________ " in the mark is "__________"

The English translation of the __________ word "__________" in the mark is "__________"

The English translation of "__________" is "__________"

The wording "__________" has no meaning in a foreign language

The non-Latin characters in the mark transliterate to "__________" and this means "__________" in English

The __________ characters in the mark transliterate to "__________" and this means "__________" in English

The non-Latin characters in the mark transliterate to "__________" and this has no meaning in a foreign language

All information in the "Translation" and "Transliteration" fields in the application record will automatically be printed in the Official Gazette and on the certificate of registration.  Accordingly, the examining attorney must ensure that the translation or transliteration is entered into the Trademark database.  When an examining attorney determines that a translation should not be printed because it is unnecessary, the examining attorney must ensure that the translation is deleted from the Trademark database, and enter a Note to the File in the record indicating that the translation has been deleted.  The document containing the information deleted from the Trademark database will remain of record for informational purposes.  See TMEP §817 regarding preparation of an application for publication or registration.